I Like the Nightlife Baby!

In its recent decision, Cutino v. Nightlife Media, Inc., 2014 U.S. App. Lexis 15179 (Fed. Cir. Aug. 7, 2014) (“Nightlife Media”), the Federal Circuit underscored its preference for adjudicating, on the merits, trademark opposition proceedings. The court directed the Trademark Trial and Appeal Board (“TTAB”) to consider whether one of three federal trademark registrations, owned by Michael J. Cutino (“the Opposer”), precluded registration of the trademark “NIGHTLIFE TELEVISION” (serial no.: 77/325,174). In its Notice of Opposition, the Opposer sought to prevent Nightlife Media, Inc. (“the Applicant”) from securing a federal registration for its trademark “NIGHTLIFE TELEVISION.” The Opposer alleged that registration of the “NIGHTLIFE TELEVISION” mark would result in a likelihood of confusion with three federal trademark registrations owned by the Opposer for “NEW YORK’S NIGHTLIFE” (registration no.: 1,207,169), “LONG ISLAND’S NIGHTLIFE” (registration no.:1,324,398), and “NIGHTLIFE” (registration no.: 1,908,411).

However, the documents that were attached to the Notice of Opposition reflected the current status and title for only two of the marks – – “NEW YORK’S NIGHTLIFE” and “LONG ISLAND’S NIGHTLIFE” – – and not for the third mark, “NIGHTLIFE.” Nightlife Media at *2. Applicant, nonetheless, admitted in its Answer that the Opposer “is the owner of the three marks and that the pleaded registrations identify the goods and services alleged by [Opposer] in his opposition.” Id. at *2-3.

In response to certain deficiencies with respect to the Opposer’s untimely pretrial disclosures and his failure to take any testimony or introduce evidence, Applicant sought to strike the disclosures and dismiss the opposition proceeding based on the failure to prosecute. Id. at *3. The TTAB granted the Applicant’s request to strike the pretrial disclosures, but refused to dismiss the opposition proceeding because the Opposer’s two trademark registrations for “NEW YORK’S NIGHTLIFE” and “LONG ISLAND’S NIGHTLIFE” “were sufficient to make out a prima facie case with respect to standing and priority.” Id. at * 4. The TTAB also concluded that the Opposer’s “NIGHTLIFE” trademark registration was not in the record because the Opposer failed to provide the proper documentation attesting to the current status and title of the third mark, “NIGHTLIFE.”

After granting a second motion by the Applicant to strike other documents and evidence submitted by the Opposer, the TTAB entered its final decision dismissing the Opposer’s opposition, concluding that:

Proof of the registration of the “NIGHTLIFE” trademark was not in the record, and, thus, would not be considered in the TTAB’s determination because the Opposer did not supply, as required by the TTAB rules, documentation to establish the current status and title of the trademark registration. Id. at *4-5.

The Opposer’s two trademark registrations, together with the pleadings, the prosecution history for the “NIGHTLIFE TELEVISION” trademark application, and the deposition testimony of Applicant’s owner, were insufficient to establish deceptiveness and false suggestion. Id. at *5.

There was no likelihood of consumer confusion with respect to the “NIGHTLIFE TELEVISION” mark on the one hand, and the “NEW YORK’S NIGHTLIFE” and “LONG ISLAND’S NIGHTLIFE” trademarks on the other hand. Id. at *5-6.

In assessing likelihood of consumer confusion, the TTAB concluded that the “NEW YORK’S” and “LONG ISLAND” portions of the Opposer’s registrations, although descriptive and disclaimed by the Opposer, nonetheless, “still make [the Opposer’s] marks look and sound significantly different than “NIGHTLIFE TELEVISION.” Id. Also, the Opposer’s two registrations “cover monthly magazines focused on particular geographic areas, while Applicant sought to register its mark for television and other broadcasting services.” Id. at *6.

Thus, without additional evidence concerning any of the remaining elements of the likelihood of confusion analysis, the TTAB held that there was no likelihood of consumer confusion. Id.

The Federal Circuit concluded that the TTAB abused its discretion in failing to consider, and ultimately disregarding, the Opposer’s trademark registration for “NIGHTLIFE.” Id. at * 7. This failure violated not only the TTAB’s own procedures, but also precedent from the Federal Circuit. Id. at *8. Specifically, the Federal Circuit reasoned that:

…an opposer’s registration will be deemed to be of record if the applicant’s answer contains admissions sufficient to establish the current status of the registration and the plaintiff’s ownership of the registration. Id.

In its Answer, the Applicant admitted that the Opposer owned the “NIGHTLIFE” mark; the Applicant did not deny – – and thus for pleading purposes, admitted – – that the Opposer owned the corresponding federal trademark registration. Id. That, the court concluded, was enough.” Id. at *9.

The TTAB, on remand, must now consider the potential for likelihood of consumer confusion between the Applicant’s “NIGHTLIFE TELEVISION” mark and the Opposer’s federally registered trademark for “NIGHTLIFE.” But since it was not appealed, the TTAB’s order, that found no likelihood of consumer confusion based upon the Opposer’s other two federal trademark registrations, will not be disturbed.

The Federal Circuit’s decision does not foreclose registration of “NIGHTLIFE TELEVISION,” but it does raise the question: would consumers be confused if “NIGHTLIFE TELEVISION” bumped up against “NIGHTLIFE?” In its April 2013 order, the TTAB was able to look to those elements of the Opposer’s registrations featuring the phrases “NEW YORK’S” and “LONG ISLAND’S” to distinguish the overall appearance of the Applicant’s “NIGHTLIFE TELEVISION” mark. The Opposer’s registration for “NIGHTLIFE,” however, does not feature any such distinguishing elements. Thus, this prong of the TTAB’s likelihood of confusion analysis will turn on whether the inclusion of the word “TELEVISION” in the Applicant’s mark sufficiently distinguishes the overall appearance of the Applicant’s unregistered mark from the Opposer’s registered mark.

Likewise, the portion of the TTAB’s likelihood of confusion analysis which compares the goods and services covered by the Opposer’s registration and sought to be covered by the Applicant’s mark must be revisited and carefully scrutinized. In its April 2013 order, the TTAB was able to distinguish the relevant goods and services by underscoring the fact that Opposer’s registrations only covered monthly magazines, whereas Applicant sought registration in connection with television and broadcasting services. This distinction should be reconsidered based upon the fact that the Opposer’s “NIGHTLIFE’ registration also covers “television programming services.”